Patent Office Litigation

Shook, Hardy & Bacon’s patent attorneys have handled numerous post-issuance proceedings before the Patent Trial and Appeal Board (PTAB), including those available prior to the institution of the America Invents Act (AIA) and those authorized by the AIA. We are intimately familiar with the unique procedural requirements and potential pitfalls of representing clients before the PTAB in a post-issuance proceeding. The technical backgrounds of our attorneys and many Ph.D. patent agents and analysts span across multiple disciplines, allowing us to have a detailed understanding of the prior art and patented technology.

Shook’s Patent Office Litigation Team consists of attorneys with patent prosecution and counseling experience and/or IP litigation experience, who work together to bring or defend Patent Office post-issuance proceedings while coordinating strategy for co-pending district court litigation. We have extensive experience representing both the patent owner and petitioner/requester in post-issuance proceedings, including ex parte and inter partes reexaminations, covered business method reviews, and inter partes reviews.

When representing the patent owner, Shook’s experience includes persuading the Board to deny institution of multiple inter partes review petitions—two of the first denied by the PTAB on substantive grounds—resulting in a large settlement.

When representing the petitioner or requester, Shook has utilized the expanded set of post-issuance tools authorized by the AIA to assist clients in challenging patents, in lieu of or in addition to pending litigation, to provide effective and efficient results for our clients. For instance, in several cases, Shook has used inter partes review proceedings to effect favorable settlement terms in a pending litigation.